The plaintiff is Deutsche Post AG, in whose favor the trademark “POST”
The I. Civil Senate of the Federal Court of Justice (BGH), responsible inter alia for trademark law, had to decide on June 5, 2008, in two proceedings concerning the scope of protection of the trademark “POST”. The plaintiff is Deutsche Post AG, in whose favor the trademark “POST” is registered, inter alia, for the transport and delivery of letters and parcels. In the now decided proceedings, the plaintiff proceeded under this trademark against two companies providing courier and postal services that include the component “Post” in their company name and use it in the provision of their services. In the first case, the plaintiff sued a company for infringement of its trademark, which operates under “City Post KG”, had a word/picture mark with the component “CITY POST” registered, and uses the components “city post” as a domain name and email address. The Regional Court and the Higher Regional Court of Cologne had dismissed Deutsche Post's action in the previous instance, citing a lack of likelihood of confusion.
Deutsche Post's second action, based on the trademark “POST”, was directed against a company named “Die Neue Post”, which also uses this designation on its website. The Higher Regional Court of Naumburg had prohibited the defendant from using this designation, in agreement with the lower court, the Regional Court of Magdeburg.
The Federal Court of Justice ultimately upheld the decision of the Higher Regional Court of Cologne to dismiss the action. Conversely, the BGH overturned the judgment of the Higher Regional Court of Naumburg and dismissed the action. It left open whether there was a likelihood of confusion between the plaintiff's trademark “POST” and the challenged signs “City Post” and “Die Neue Post”. The Federal Court of Justice denied the plaintiff's claims arising from its trademark pursuant to Section 23 No. 2 of the German Trademark Act (MarkenG). According to this provision, the trademark owner cannot prohibit a third party from using a sign similar to the plaintiff's trademark as an indication to describe the goods or services offered by the third party, provided that such use does not violate public morals. Companies providing postal services after the partial opening of the market have a particular interest in using the designation “Post” to describe their field of activity. As long as competitors of Deutsche Post AG differentiate themselves from the exclusively used trademark word “POST” by adding further elements, and do not increase the likelihood of confusion by adopting additional distinctive signs and design features of Deutsche Post AG – such as the post horn symbol or the color yellow – they cannot be prohibited from using the designation “POST”.
Furthermore, proceedings are still pending before the Federal Court of Justice concerning the cancellation of the trademark “POST” registered in favor of Deutsche Post. These proceedings will be heard on October 23, 2008. The designation “Post” – which is inherently descriptive and therefore not readily registrable – was registered as a trademark in favor of the plaintiff on the grounds that it had acquired distinctiveness as an indication of origin. Given that the Federal Court of Justice ultimately dismissed the actions in the cases decided today, there was no need to await the outcome of these cancellation proceedings.
Judgments of the Federal Court of Justice (BGH) dated June 5, 2008 – Case Nos. I ZR 108/05 and I ZR 169/05
Lower Courts: Regional Court of Cologne – Judgment dated September 9, 2004 – Case No. 31 O 246/04
Higher Regional Court of Cologne – Judgment dated May 27, 2005 – Case No. 6 U 196/04
and
Regional Court of Magdeburg – Judgment dated January 20, 2005 – Case No. 7 O 2369/04 (061) GRUR-RR 2005, 158
Higher Regional Court of Naumburg – Judgment dated august 19, 2005 – Case No. 10 U 9/05, GRUR-RR 2006, 256
Source: Press Release No. 107/2008 from the Press Office of the Federal Court of Justice dated June 5, 2008, Herrenstraße 45 a, 76133 Karlsruhe, Telephone 07 21 – 159-5013, Telefax 07 21 – 159-5501, E-Mail: pressestelle@bgh.bund.de
Goldberg Attorneys at Law, Wuppertal-Solingen 2008
Attorney at Law Michael Ullrich, LL.M.(Information Law)
m.ullrich@goldberg.de
